October 02, 2013

Design Patent Myths—An introduction

First of all, thank you to Dan
for inviting me to be a guest blogger this month. I’ll be taking this
opportunity to talk about my favorite topic, design patents.

Ever since the jury returned
its blockbuster verdict
in Apple v. Samsung last summer,
design patents have been enjoying an unusual amount of attention—both in the media and in academia. But there is
still a lot of misinformation out there.

So while I’m here, I’d like to address some design patent myths that I've encountered in the course of my research. Some
of these myths are widespread; others are less common but raise interesting issues.
Some are truly myths; in other cases, I’ll use the word “myth” more loosely.
But before I dive into the myths, a bit of background might be helpful.

The American design patent
system is actually quite old—the first design patent statute was passed in
1842. So long before (most) designs could be protected by copyright or
trademark law, they could be protected by design patents.

Under the current statute, “any
new, original and ornamental design for an article of manufacture” can be
patented if it satisfies the general requirements for patentability, such as
novelty and nonobviousness. Like other types
of patents, design patents do not arise automatically; they must be granted
by the U.S. Patent and Trademark Office following substantive
examination.

One key difference between design patents and other types of patents is the nature of the claims. While technological inventions are claimed
using words, designs are claimed using pictures. Specifically, solid lines
are used to show what portion(s) of the design is claimed; broken lines can be
used to show unclaimed “environmental” matter or boundaries. (If you're interested in more details, here is a slightly longer discussion.)

Design patents have been issued
for a wide range of designs. Here are just a few examples. First, here is the
drawing from D11,023, which was granted to Auguste Bartholdi in 1879 for Liberty
Enlightening the World (a/k/a the Statue of Liberty):

And here is one of my personal favorites, D181,945,
issued to Eero Saarinen in
1958 for the design of his iconic Tulip Chair:

Finally, here are some of the drawings from D283,037, issued Hasbro in the 1986 for a classic My Little Pony toy:

﻿

(For the record, I don’t know why Hasbro decided to omit the
manes and tails entirely, instead of showing them in broken lines.)

In my next post, I’ll address one of the biggest, most enduring myths about design patents. In the
meantime, if you have questions about design patents or have a myth (or other topic) you’d like
me to address during my time here in the Lounge, please shoot me an email or to
leave a note in the comments.

MacK - Thanks for the comments. A lot of these are in the queue already, so stay tuned.

As to your last point, though, I can't say I've perceived any hostility toward design patents from the Federal Circuit--at least since Judge Rich. But if you (or anyone else) has seen something different, I'd love to hear more.

I'd add another one - forum shopping in the EU and registered designs - it is generally perceived that some courts are more favourable to design cases than others. Italy gets recommended (so long as you stay in the north), France.